Copyright Law Outline



Copyright Law Outline

Jessica Litman, Spring 2000

Nichelle Nicholes Levy

I. The Concept of Copyright

A. Historical Perspective

1. Origins of Copyright: Derived from printing press licensing restrictions used as a prior restraint in UK.

2. Copyright Act of 1790: Protected utilitarian rather than creative works: maps, books, and charts created by US Citizens, encouraged piracy of works from abroad.

3. Purpose of protection: not protecting natural rights, enacted as a bribe to persuade artists and inventors to create and share works with the public. Some argue that creators don’t need incentives to create but distributors need incentives to distribute. As the cost of distribution goes down, do we still need to bribe publishers?

4. Historical trends: to extend the copyright term, broadened subject matter covered by copyright protection, add new rights, exemptions and privileges.

B. General Principles

1. Thematic issues:

a. How to design copyright to protect composers and maximize the amount of music released? Want to give credit to creators but don’t want to stop genre’s from developing.

b. Copyright protects two interests: the right to make money and the right to protect the integrity of the work. The moral and economic rights are bundled together in US System, separated in EU.

c. Policy reasons for vesting copyright automatically with a low bar of originality:

1) Don’t want the gov’t deciding what is art

2) Trivial damage from overinclusiveness, people won’t enforce rights in works of low value.

3) Low administrative costs, broadens protection for those not legally proficient.

d. Downside to low bar:

1) Giving undeserved rights in images that should remain in the public domain.

2) Most won’t fight an assertion of copyright.

3) Ties up building blocks of expression.

4) Discourage new works and their dissemination.

2. Determining Copyright Infringement:

a. As a factual matter, did the person who created the second work copy something from the person that created the first work? Or did he arrive at the same creative expression on his own?

b. If there was copying, did the person who created the second work copy protectible expression or non-protectible fact?

1) Burrow-Giles Lithographic Co. v. Sarony, 1884: D copied Ps photograph, then argued that this copying was permitted because photographs were not the subject to copyright. Court finds that photograph embodies original, protectible expression. The staging of the photgraph is protectible. Problem is determining what expressive elements the second photographer took.

c. What constitutes protectible subject matter?

1) Bleistein v. Donaldson Lithographic, 1903: Holmes held that advertising should be the covered by copyright because the Court doesn’t want lawyers and judges deciding what works merit copyright protection. As long as a work reflects some scintilla of the author’s originality, that’s enough.

C. Overview of Copyright Law: review pp. 37-48.

1. Copyright is property:

a. Can be sold outright, subdivided, mortgaged, rented

b. Sales subject to statute of frauds

c. Can be inherited

d. Can be owned individually, jointly, in common

e. Possibility of reverter

2. Intangible goods: Can own intangible copyright right in the authorship of a book, but no rights in the tangible book itself.

Distinctions: Patents

1. Patent requirements: granted for 20 year term (check this), only for significant advances that are new, novel, useful, and non-obvious in light of prior art as perceived by an ordinary person in the relevant field.

2. Alfred Bell v. Catalda Fine Arts, 1951: D copied Ps mezzotint engraving. P filed for a copyright in the engraving. D tried to argue that originality requirement in copyrights should be as high as in patents. The court disagreed.

a. Founders Intent: they distinguished between authors and inventors, passed two different statutes with different levels of requirements.

b. Original only means that the work originates with the author: won’t have infringement if a second author comes up with an identical writing independently. Copyright doesn’t require uniqueness or creativity, but patent does.

Distinctions: Trademarks

1. Trademark requirements: The basis for an action in trademark is consumer confusion. If the same work is protected by copyright, the basis for the action is whether or not the use is authorized.

a. Copyrights can only be infringed by copying, trademarks can be infringed by coincidence.

b. Trademark and state unfair competition laws protect consumers from confusion. Copyright infringement is actionable even if no one is confused.

2. Frederick Warne v. Book Sales, 1979: copyright had expired and holder trying to enforce trademark rights, which last forever as long as used in connection with the sale of the product. P arguing that Ds use will confuse consumers because they associate the images with P due to its acquired secondary meaning. P has to prove that the pictures do signify published by P to a significant portion of the public. D arguing that P is trying to extend its copyright monopoly. Court agrees that D can use the images in a limited fashion, wants their public domain status to be meaningful. However, If P is right and D attempts to exploit the images, provides evidence of trademark significance.

3. Trademark provides copyright holders leverage to keep their marks out of the public domain once their terms have expired.

Distinctions: Chattels

1. When is copyright transferred?

a. Forward v. Thorogood: P gave studio tapes to manager as a gift. 10 years later, the manager sold the demo tapes for commercial release. D argues that the copyright passed with possession.

1) Statute of frauds requires copyright transfer with a signed writing confirming you are doing so.

2) Common law presumption that copyright passed with the material object unless expressly preserved. Court found from the factual situation that P didn’t intend to transfer the underlying copyrights.

b. § 202 Ownership of copyright as distinct from ownership of material object: Transfer of ownership of any material object, including the copy or phonorecord in which the work is first fixed, does not of itself convey any rights in the copyrighted work embodied in the object; nor, in the absence of an agreement, does transfer of ownership of a copyright or of any exclusive rights under a copyright convey property rights in any material object.

II. Copyrightable Subject Matter

In General

§ 102(a) requires original authorship and fixation in tangible form, §101 doesn’t contain a definition of originality. The House Report indicates that the drafters intentionally left the term undefined to keep interpretive history intact. Does not require novelty, ingenuity, or aesthetic merit.

1. Original Works of Authorship

a. Feist v. Rural: originality requirement is low

1) Independently created by the author with a slight creative spark. Originality = creativity + originates with the author, not just copied. (Catalda)

2) A constitutionally required standard: would be unconstitutional to give out copyrights for things that are not original. Brings Catalda into question since he was copying domain originals.

b. Magic Marketing v. Mailing Services of Pittsburgh, 1986: P sued D for allowing other customers to use its envelope designs. Court held that the copyright was invalid because the envelopes are not original, lack creativity. These terms are part of the common language, if grant a monopoly, could drive up the cost of junk mail.

c. Sebastian Intl. V. Consumer Contacts, 1987: Court finds that labels have minimal creativity, upholds the copyright.

1) Length: things that are too short are not copyrightable. But see lighght (Aram Saroyan). If it is creative and original may break the blanket rule that things that are short are insufficiently creative.

2) Content: Sam Beckett play with no words was copyrighted based on stage direction.

2. Fixation in Tangible Form: before a work can be protected by copyright it must be fixed.

a. Fixation: a work is fixed in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. A work consisting of sounds, images, or both, that are being transmitted, is fixed for purposes of this title if fixation of the work is being made simultaneously with its transmission. (§ 101).

b. Not fixed if not recorded, or if broadcast live and not recorded. Fixation provides minimal proof of copyright.

c. Transmission: to communicate by any device or process whereby images or sounds are received beyond the place from which they are sent.

d. Fixation Medium: doesn’t matter. Just requires a fairly permanent tangible embodiment that will permit the work to be perceived without the aid of a machine.

1) If document on computer not printed or saved to disk, author of book says fixed, Litman disagrees. Definition crafter before RAM memory possible.

2) Most computers make temporary copies when viewing, so saving to disk. But due to transitory nature, may not want to base evidentiary requirements on this.

3) Problem is that fixation refers to both when protection attaches and when a work is infringing another’s copyright. So that temporary RAM files from Internet are both copyright protected and infringing.

The “Idea/Expression Dichotomy”

1. § 102(b) In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

2. Forms/Systems:

a. Baker v. Selden, 1879: Selden’s widow sued Baker for adapting the accounting system without paying licensing fees. Court holds that copyright doesn’t give exclusivity to the functional part of the forms. Assumes that the purpose of writing the book was to enable other people to use the system. (codifed in 102(b)).

1) Court doesn’t want to encourage end runs around the patent system by letting copyright holders assert patent rights. There is no right to make, use and sell for long periods.

2) Difficult to distinguish the idea from the expression here, since all agree that the forms are original, but also necessary to using the functionality of the system. Court decides to err on the side of underinclusiveness by allowing others to copy the expression if it can’t be separated from the underlying idea.

a) Where to draw the line when the idea is necessary to the use? Maps, are useful and factual and receive very thin copyright protection.

i) Map makers have attempted to extend their monopoly by making up fictional places.

ii) Argue that creativity exist in figuring out how to condense all of the information in a way that is visually useful.

3) Implications for computers: if don’t protect functional parts, most will be unprotected. But if provide protection, inviting end run around patent system. Fear that this will force people to get patents for things that copyright won’t protect, and that patent shouldn’t. (like business method patents).

b. Bibbero Systems v. Colwell Systems, 1990: P sued D for copying clinical forms. Held that blank forms are not copyrightable, just instructional.

1) Other courts have held that this is protectible expression because forms convey information in the categories they hold and choices made.

2) SAT form has been held to be copyrightable.

c. Continental Casualty Co. v. Beardsley: holds that insurance forms are copyrightable, though only thinly so. If make even one change there is no infringement. Would have found Bibbero copying actionable.

2. Procedure:

a. Morrissey v. Proctor & Gamble, 1967: P suing D because copied contest rule verbatim. Court finds that though the rule was original, providing copyright protection is inconsistent with the public interest. There are a limited way to express this rule, don’t want P to get a monopoly on contest design just because they’ve locked up the wording.

1) Case suggest that if intellectual ideas can only be expressed in a limited number of ways, they will not be protected. Difficulty is determining the limitations.

2) Court influenced by the equities because appeared that P was trying to establish a business method patent.

3. Method of Operation:

a. Lotus Development v. Borland, 1996: P sued D because copying the look and feel of its program rather than the underlying code. 1st Cir. Reversed the trial court holding that Lotus’ menu structure was an unprotectible method of operation. (affirmed by evenly divided S. Ct.). D had only copied the menu command operation, the Court likened this to the buttons on a VCR.

1) Facilitates interoperability: once operation becomes a de facto standard, protection goes away. Lotus argues this is a penalty for success. But if they were allowed to tie up the useful building blocks, later authors would have nothing to improve upon.

2) Lotus trying to thwart competition: by using copyright as a leverage to stifle competing products.

3) Distinguishing a method of operation: statute provides no language. Courts permitting looser interpretation to facilitate interoperability. Now reined in by DMCA by reverse engineering prohibitions.

Facts and Compilations

1. Facts:

a. Untrue Facts: Hoyle sued Trivial Pursuit for copying his true facts and his ringers. Argued that the ringers should be protected since being presented as true.

b. Analysis: a form of expression, derived from underlying fact but incorporates author’s opinion and expertise, so should be protected.

1) Wainwright v. Wall Street, 1978: Held it was an infringement to assimilate or quote facts from analysis because assimilated analysis to expression. No longer good law after Feist, which holds that facts are unoriginal and uncreative.

c. Feist v. Rural, 1991: Rural refused to sell a license to Feist to use the information in the phone book for its marketing purposes. Court held that the copyright statute does not protect fact, under § 102(b) assimilates facts to discovery. Copyright won’t protect the compilation of facts unless the form that they are presented in is sufficiently creative to warrant protection.

1) Import of case: unanimously overruled all prior decisions that found phone books protectible. All pre-1991 cases need to be reevaluated in light of this decision.

2) Requires originality: Unconstitutional to protect facts because they are not original. Originality requires creativity alphabetization and compilation of the phone book is not creative.

3) Copyright does not compensate for effort: no sweat of the brow doctrine, must be sufficiently creative, mere compilation is not enough.

d. Legislative solution: HR 354 Collection of Information Antipiracy Act, intended to plug the gap Feist opened in the law. Provides protection outside of copyright for information included in compilations. Providing an incentive for factual publication, without distorting copyright law. The scientific community was against this legislation, passed the house, but didn’t get to the Senate.

1) Broad definition of collected information: databases, dictionaries, history, casebooks, articles with tables.

2) Reinjecting sweat of the brow theory

3) Attempting to harmonize US law with EU protection of databases.

4) Based on unfair competition doctrine: passed under Congress’ Commerce Clause authority. But have conflict because protecting information. Clear attempt to make an end run around constitutional limitations expressed in Feist.

e. Factual Narrative: not protected, would be protected if fictional, then clearly involves expression.

1) Nash v. CBS, 1990: Historian wrote book based on theory that Dillinger wasn’t killed, just went West. Simon & Simon based an episode on this theory. The idea was not protectible. The author can’t claim that he made it up because he presented the fact as the truth. Could have turned this into fiction by initially presenting it that way.

2. Compilations:

a. Definition: a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term “compilation” includes collective works. (§ 101).

b. Copyright Protection: includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully. (§ 103).

1) Protection only extends to what was added.

2) If the underlying work is used lawfully, the compilation is protected whether or not the author has granted permission.

c. Policy disagreement:

1) Rewarding for sweat of the brow: if choose not to protect because not original, it is still tempting to protect fact like information if there is a demonstration that P invested a lot of energy in developing it.

2) Keeping facts in public domain: If don’t protect because want information to act as building blocks for others, then it doesn’t matter whether or not the fact was derived through a creative process. The point here is not how deserving P is, but whether or not the information furthers science and the useful arts and therefore should remain in the public domain.

d. Cases

1) Matthew Bender v. West, 1998: After Feist, Bender challenged assumption that West had a copyright in its compilation of legal reporters. Created CD Rom with hyperlinks to West documents. Court held that Bender could take everything, the material West added is de minimus and does not meet the Feist standard. Prior settlement between Lexis and West stood but other publishers are free to disregard West copyright.

2) CCC Info Services v. Maclean (Red Book), 1994: D combined Ps projections along with Ps competitor’s projections to come up with an average. Court held that D infringed Ps copyright because P had invested professional judgment and expertise to develop his numbers. Found originality in regional divisions, mileage evaluation and other differentiating variables.

3) Bell South v. Donnelly, 1993: held that D had not copied original copyrightable elements.

4) Mason v. Montgomery Data, 1992: 5th Cir. Believes Ps maps are copyrightable because he took disparate sources and decided how to merge them to create a new map. P gets a copyright in the map as a whole, as a collection of facts, but not in the underlying facts. D can take the underlying facts, but can’t take Ps expression. D must find another way to express Ps idea.

Derivative Works

1. Definition: a work based upon one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted. A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work”. (§ 101).

a. Copyright protects only what the derivative author adds, no claim to the pre-existing material.

b. The derivative work may infringe the original work if done without permission.

c. Copyright protection doesn’t extend to any part of the work that uses the underlying work unlawfully. Could lose copyright in the entire work if the underlying work is a substantial portion and it is unlawful. (§ 103(b)). House report indicates that this was an intentional feature to prevent infringement from generating a benefit.

2. Originality: since only get rights in what is added, at what point has the second author added enough to meet the originality standard?

a. Batlin v. Snyder, 1976: two vendors making plastic copies of a public domain Uncle Sam. Court holds the idea of rendering the public domain design in plastic is not protectible and Snyder does not have rights to the underlying design. Pre-Feist case imposing a high standard for originality. Post Feist, court looks at what the derivative author adds and evaluates if it demonstrates creativity. This case is still good law.

1) Trivial differences: the court is concerned that if it grants copyright for trivial differences could allow one person to monopolize all public domain works, removing the public benefit.

2) Burden of Proof: P must first prove that D copied his copyrightable expression by showing that D had access to a copy or that Ds work was substantially similar to Ps work to the basic observer. The burden then shifts to D to prove independent creation or other explanations for the similarities between the two works.

Computer Programs

1. Definition: a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. § 117 limits the copyright holder’s exclusive rights. Software owners can made copies to adapt the software and make it run on their machines. They may also take whatever steps are necessary to repair or maintain the software.

2. History: Initially protected under the rule of doubt, now as copyrightable as everything else. Only give copyright to the expression, not the underlying process.

3. Policy: if protect expression, companies can price so that it is cheaper to buy the copy than write the program, allows authors to protect investment. However, don’t protect the underlying method of operation if there is only one way to write commands, want others to be able to build on prior success.

4. Apple Computer v. Franklin, 1983: Franklin copying Apples program directly from chips, didn’t try to make an independent interoperable program. If the program is copyrightable, then this is infringement. Difficult to separate function from expression in computer programs since they are primarily functional. 3d Cir. Compares the computer program to a book and finds that there is protectible expression. Finds that Apple is protecting the expression, not the method, though no principled distinctions can be drawn between an application and operating system.

a. Mazer v. Stein: cited by court for proposition that if a work is otherwise copyrightable, it doesn’t become uncopyrightable when used in a useful object. The useful article distinction is troublesome for computer programs. Would have been better for the courts to tailor protection to this unique industry rather than analogizing to books.

b. Merger: works here because dealing with a knock-off, where D actually stole the whole thing (both idea/expression) wouldn’t have worked if Franklin had created separately interoperable software (just the idea).

Pictorial, Graphic and Sculptural Works

1. PGS works are copyrightable except to the extent that they are useful articles: protectible to the extent that it has distinguishable features capable of protection separate from the useful part. (§ 113). Visual art divided into two categories:

a. Ornamental: drawings and photographs are protectible. (§ 101(1))

b. Utilitarian: includes industrial design, which is protectible only to the extent that the design has elements that are separable and capable of protection. (§ 101(A)). When something is useful, want people to have to go through the patent system for protection. If it is not useful in a patent sense then want to be able to protect the creativity.

1) 2-D works of art are copyrightable. Pictures of useful articles are protectible but no rights are granted in the useful part of the article.

2) 3-D works of art more difficult: Mazer v. Stein held if work is otherwise copyrightable, doesn’t become uncopyrightable because it is published in a useful article. This case extended copyright to articles previously unprotected.

2. Separability: can’t tell if an element is copyrightable unless it can be separated from the useful article and exist independently of the useful article.

a. Policy: copyright office will deny copyright registration to a design whenever the effect of copyright would be to tender a monopoly to manufacture of a useful article. If there are elements that can be protected without giving exclusive rights to the useful part, will register those parts.

b. Line drawing limited by imagination of the judge. Court looks for physical separation of the function from the art.

1) Clothing: designs and patterns designs on fabric are copyrightable as long as show originality. The clothing itself is not copyrightable.

2) Masks: protectible as sculpture. Costumes for kids protectible as long as don’t function as clothing.

c. Kieselstein-Cord v. Accessories by Pearl, 2d Cir, 1980: involved an ornamental belt buckle. Court ruled 2-1 in favor of copyrightability. The buckle itself is capable of existing independently of the utilitarian belt function.

1) Litman criticism: unprincipled decision, relying on ornamental appearance to determine separability although the belt function could not work without the buckle. Majority found it easy to imagine the ornamental part existing independently from the belt.

2) Jewelry is always thought to be copyrightable: can be used separately and does not convey information.

d. Barhart v. Economy Cover Corp, 2d Cir., 1985: P was the creator of mannekin forms. The forms were registered with the Copyright Office. D argued that P should have been able to register them because they are purely functional. Court agrees, holds that every aspect of the shape is related to the function, separability is not possible.

e. Brandir Intl v. Cascade, 2d Cir. 1987: ornamental bike rack, have to go back to discern the designers motivation, did he design the rack this way because it was more functional or because it looked better? Looser test, conceptual vs. physical separability.

f. Cush Balls: (class example) registration as a sculptural work refused. Challenged on the ground that the balls are useful for stress reduction and that the color pattern was separable. Already had a utility patent as a device for physical and occupational therapy. Impossible to separate shape from function.

Architectural Works

1. Architecture is protected without regard to utilitarian features. (§102(a))

2. Definition: design of building in any tangible meaning including buildings, plans or drawings. Includes shape of building, interior architecture. (§101)

3. Limitations to protection (§ 120):

a. Others can photograph buildings in public places.

b. Owners of buildings may make alterations, though the architect continues to hold the copyright.

c. Destroying a work is not copyright infringement.

d. This protection does not preempt historic preservation, zoning, or building codes.

4. Architectural drawings fixed in blue print are protected by both § 113, which incorporates a useful article distinction, and § 120, which has no useful article distinction.

5. Berne Convention obliged protection for architecture: architects didn’t think this was a good idea because good design incorporates elements of other’s works, didn’t see a problem since there was not a great deal of plagiarism and what existed was actionable under blueprint infringement.

a. Only have cases of architects suing clients to prevent them from taking their designs to someone else. No cases of architects suing other architects for design infringement.

Characters

1. Definition: A character is a combination of idea and expression contained in a work of authorship. Have to determine what aspects of the work are protected and what are not. Separating the idea from the expression may be more or less difficult depending on the medium.

a. Play: copyright covers characters, plot, stage direction. Characters may be defined by what they say and do, how they look or expressed themselves to the extent this is not a cliché. The more details, the more expression. The court won’t give ownership in common details: scenes a faire, obligatory scenes, genre elements.

b. Novel: author describing the characters. Sequels will be unsatisfactory if unfaithful to the original.

c. Visual art: characters expression based on how he looks, there is no way to come up with characters that look like him.

2. Author’s Right to Work: Necessary to continued exploitation of copyrights that style of drawing, writing, aspects of character are protected. But have to be careful that not at expense of the author’s continued ability to earn a living.

3. Nichols v. Universal Pictures: play about Jewish-Irish Catholic romance. Universal tried to buy the rights but negotiations broke down. Universal hired a screen writer and gave them a copy of Nichols’ script. Universal even advertised the movie as the screen version of the play. Hand said although they had copied her characters and plot, there was no infringement because the characters were stereotypes, too undeveloped to be protected.

4. Warner Bros v. CBS: court held that Sam Spade was uncopyrightable since it was not covered by the copyright in the Maltese Falcon.

5. Anderson v. Stallone: Court concluded that Rocky and supporting characters are sufficiently defined to be protected. D wrote a treatment for a sequel, Stallone used the treatment without paying. D sued for compensation. Since Stallone never gave permission for the treatment, have a derivative work that pervasively uses an underlying work unlawfully, so it is not protected by copyright at all and Stallone can use it as he pleases.

Government Works and Other Public Policy Issues

1. Government Works: automatically in the public domain, not protected by copyright. (§ 105). Result is that a lot of government works are not printed because private publishers don’t see this as a profit making enterprise. Information is being posted on Internet, but access there is limited.

a. The government is allowed to buy copyrights in works it didn’t create

b. Allowed to permit gov’t contractors to hold copyrights in commissioned works.

1) Argue that this makes it possible for the government to pay these contractors less, less tax burden on citizens.

2) Permits an end run around the statute by protecting works that should be in the public domain. Software is routinely protected in this way.

3) Efforts to repeal § 105 for databases and software because at a competitive disadvantage with those countries that allow copyright protection.

2. Policy:

a. Want to maximize access to work of the government.

b. The public shouldn’t have to pay twice, since it already paid for the work in tax dollars.

c. The government doesn’t need an incentive to create more works.

d. Fear that copyright could be used as a means of suppressing access, prior restraint. In U.S. v. NYT (The Pentagon Papers) the government tried to suppress publication of newsworthy documents on ground that would risk national security.

3. Some have argued that government works should be copyrightable:

a. To induce private industry to pay for published government works, would allow citizens to pay less in taxes.

1) But could have stark distributional consequences, if the only ones that can read government documents are those that can afford to buy or borrow a copy.

2) Government could lose control over the messages it wants to convey to the public by publication of distorted histories.

b. Copyright could be used to protect the flag and other military insignia.

4. Obscenity: nature of the work has no bearing on its copyrightability.

a. Mitchell Brothers v. Cinema Adult Theater, 1979: held that there is no constitutional or statutory constraint on protectible material. Based on policy grounds, Congress has chosen to promote the progress of science and the useful arts by providing blanket copyright protection. Don’t want courts in the business of determining acceptable and unacceptable material.

Ownership

Initial Ownership

1. Authorship vests as soon as the work is fixed in tangible form, based on source of copyrighted expression.

a. Adrien v. Southern Ocean County, 1991: P created concept and underlying materials for the map but the printer assembled the final map. Held that P was the author because he conceived of the expressive details, just used D to help execute them.

2. Works Made for Hire: In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright. (§ 201). Majority of works in this category.

a. Policy:

1) Employers have funds to invest in creation but won’t do so unless they get ownership of the resulting product.

2) Removes the burden of contracting.

3) Want to maximize the number of works, doesn’t matter who creates them. This provides incentive for volume.

b. Works created by the employee: employer owns the copyrights unless they have expressly signed a written agreement otherwise. Even if the employee owns the copyright, still a work for hire, but the copyright will vest in the employee rather than the employer.

c. Commissioned works: under the 1909 Act considered a rebuttable presumption that these were works for hire. In 1976 Act, limited the categories of works that can be works for hire to contributions that would otherwise be joint or collective works. In addition to fitting into one of 10 included categories, must have a written contract stating that it is a work for hire. (Statute of Frauds)

d. Distinguishing between employee and contractor: want to fit into first work for hire category, employee, because then employer owns the work unless expressly stated otherwise. If fit into the contractor category, requires an express contract signing over the work and must fit into one of the ten enumerated categories.

1) If contract says who owns the copyright, automatically vests in that party.

2) Places the burden of contracting on the employer

3) Statute does not define the term employee.

a) CCNV v. Reid, 1989: Reid agreed to do the sculpture, CCNV to do the base. When time to display, feud over who has control over the piece. Turns on whether Reid is an employee or an independent contractor. Multifactor test removes predictability, balanced here to determine that Reid was not an employee because worked as an independent contractor.

i) RIAA interest: had contracts with non-traditional employees, who didn’t fit into one of the enumerated categories in commissioned works, so would only be work for hire if the definition of employee could be stretched to fit. In 1999, sound recordings became potential works for hire: allows sound recordings to be construed as works for hire when there is no employer/employee relationship.

ii) Marshall creates multifactor test based on the restatement of the law of agency to determine Reid’s status: skill, source of tools, location of work, duration, ability to assign other projects, discretion over work hours, payment method, responsibility for hiring assistants, regular business, in business, employee benefits, tax treatment.

b) Test later narrowed to focus on benefits and tax treatment to determine how the employer is treating the employee for purposes of all legal obligations.

i) Aymes v. Bonelli, 1992: P was a computer programmer who quit his job then asked for balance of wages due. D, the employer refused to pay wages absent an assignment of copyright. Claimed there was a work for hire relationship even though no taxes nor benefits were paid due to the industry custom of working off the books. Court held that have to give greater weight to tax factors. Don’t want to encourage breaking the law. D must pay employees proper benefits and taxes if he wants to get the benefit of the work for hire doctrine.

ii) Carter v. Helmsely-Spear, 1995: P were sculptors who created work for the lobby of the building. Owner of the building gave a weekly check, paid social security, workers comp, and paid vacation. Found they were employees.

e. Scope of Employment: how do you determine when someone is acting within the scope of their employment to fit into the employee created works category?

1) Avtec v. Peiffer, 1994: P was a computer programmer as freelancer writing code. In this environment, employers prefer to take an assignment of the copyright. The court found that P was not working within the scope of his employment because

a) he created the program after hours and

b) it was not the sort of work he was hired to perform

c) the work was not created to serve the employer’s interests.

2) Cramer v. Crestar, 1995: found that P was acting within the scope of his job because creating software was part of his job and the particular program he created was for the benefit of the bank.

f. Teacher Exception: 1909 Act relied on industry practice, which permitted teachers to retain their copyrights. Noticed after passage of the 1976 Act that the teacher exception had been removed.

1) Some universities contracted with teachers to permit them to keep their own rights except for particular grants.

2) Others put in provisions that made all works for hire and owned by the university.

3) Under CCNV factors: teachers are employees acting within the scope of their employment.

a) Nimmer: argued that as long as teacher’s work not written, belongs to them.

b) Posner: argued that all of a teacher’s work may not be prepared for the university, so may not be included in the scope.

4) Vandehurst v. Colorado, 1998: found that there was no teacher’s exception. Litman argues that no copyright lawyer believes that the teacher exception survived.

g. Copyright vest automatically as soon as the work is fixed. In order to transfer it, will need an assignment.

1) Schiller & Schmidt v. Nordisco Corp, 7th Cir., 1992: Posner argued that in order to transfer a work for hire, need to have a written agreement before creation. To avoid litigation afterward, best to have an agreement before creation.

2) Playboy Entertainment v. Dumas, 2d Cir. 1995: upheld legend on endorsement part of the check which said that by signing P acknowledged that the copyright vest. Found that this was OK as long as can prove that the parties had a preexisting agreement. Agrees with Posner that need to have an initial agreement before work begins, but allowing that agreement to be oral rather than in writing.

3. Joint Works: a work prepared by two or more authors with the intention that their contributions be merged into inseperable or interdependent parts of a unitary whole. (§ 101). Intent is measured from the time of creation, must be mutual. Does not need to be in writing.

a. Ownership:

1) All contributors own an undivided part of the copyright in the entire work.

2) Co-owners own undivided prorata share in the whole, like tenants in common.

3) Each co-owner may exploit the work without permission but each must account to the others for profits.

4) No single co-owner can give away exclusive rights without the participation of the other co-owners.

b. CCNV v. Reid: explored issue of whether the sculpture could be considered a joint work. The case was settled but final determination would have turned on:

1) Whether or not CCNV had contributed enough original authorship? Close question since just making the pedestal, and only gave general creative suggestions to Reid.

2) Whether or not the parties had the requisite intent?

3) If found joint authorship here, problematic implications:

a) Would have joint works whenever the hiring party contributed specifications that rise to the level of original authorship, since each party owns what he adds.

b) Would create significant clouds on title since the copyright owner is not able to assign exclusive rights to anything because the commissioning party could exploit the work independently subject to a duty to account.

c) Might be able to resolve these problems if find that:

i) The commissioning party created a copyrightable work, then authorized the independent contractor to create a derivative work based on the underlying work. Then have one author.

ii) The commissioning party gave suggestions subject to an implied license to incorporate into the existing work. Then have one author.

c. Thomson v. Larsen, 1998, 2d Cir: Thomson was the dramaturg on Rent. After Larsen died, she continued to make changes. She claims responsibility for as much as 7% of the ultimate script and sues for joint authorship credit. She also wants 7% of Rent’s earnings.

1) Both authors must contribute copyrightable material.

2) Both authors must intend not only that their contributions be merged into an undivisible whole but they must also into to be co-authors.

a) Here intended contributions to be merged, but Larsen didn’t think of Thomson as a co-author. He didn’t list her as co-author on drafts. He retained final say about which of her contributions would be incorporated.

b) Court found this was not a joint work, although both parties intended that their expression be merged into an undivided whole.

3) Rulings such as this give the result that have works that meet the statutory definition of being indivisible, but the default is that the work will go to one author. Will force the parties to contract in advance to clarify their rights over the whole.

a) Uncertainty over ownership in theatre hinders economic because motion picture companies won’t buy rights unless they can be sure they are assignable.

b) If had allowed Thomson to be a joint author creates problems later on for licensing and other deals, can’t be done without permission and accounting to minority author.

Transfer of Copyright Ownership

1. Divisibility and Formal Requirements:

a. History: divisibility was not possible under the 1909 Act, only the copyright owner could use the notice so parties traded copyright back and forth. Could only bring an infringement action if the owner of record consented. Pre-1978 decisions must be interpreted in light of the indivisibility doctrine. Under the 1976 Act anyone with any of the non-exclusive rights is an owner of the copyright.

b. Exclusive v. Non Exclusive Ownership:

1) Exclusive grants or assignments of pieces of copyrights must be in writing and must be signed in accordance with the statute of frauds to be valid. Don’t have to register in the copyright office. (§ 204)

a) Exclusive license: a transfer of copyright ownership, has the same effect as an assignment. Standing in the shoes of the author.

i) Everything is transferable, the only question for the court is if it has been properly transferred.

b) Time limited exclusive license: copyright rights can be transferred for limited times.

i) Transfer of copyright ownership: an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license. (§ 101).

c) Beneficial owners: authors who have assigned their copyrights in return for a continuing royalty interests. Have a concrete and continuing interest in the copyright. This would be revoked if signed away rights for a flat fee. Just requires a renewal right or future expectancy. They get the right to:

i) Be paid royalties.

ii) To sue third parties for infringement.

iii) No right to exercise a copyright right, the copyright owner gets the damages, not the original author. Though the original author can recover attorney’s fees.

A) Fantasy v. Fogerty, 1987: Fogerty assigned exclusive right to song, later recorded a similar song, exclusive owners sued him for infringement. Fogerty wins because court finds the song didn’t infringe. Sound similar because he has a distinctive voice and style, overwhelms the musical similarities.

2) Non-Exclusive licenses: may be done orally, in writing, or implied in fact. (Thomson to Larson). The result is that both parties may use the copyright right.

a) Effects Assoc v. Cohen, 1991, 9th Cir: D hires P to create special effects footage. D claims to be dissatisfied with footage and refuses to pay. However, D later edits and uses the footage and P sues for infringement. Court holds that since there was no writing there was no transfer of ownership in accord with § 204, however a non-exclusive license can be implied here. Finds that Effects still owns the footage, but has impliedly licensed its use to D. Effects can demand payment and later resell the footage to recoup his losses. Decides that this is a contract rather than a copyright matter.

b) 11th and 7th Cirs have held that a third party infringer can not raise no writing as a defense if a later writing satisfies the agreement. The 7th Cir. Rejected the position that a later writing can satisfy the writing requirement (Posner), but hasn’t yet dealt with the situation where a third party has brought an infringement action to invalidate a transfer based on lack of a writing.

2. Scope of Grant: issues arise when grants predate and fail to account for new distribution mediums. Have to figure out how to deal with what was within the parties’ contemplation.

a. Policy:

1) if believe that authors are less sophisticated, may want to give them the benefit of the ambiguity.

2) May want to ensure future exploitation of the work by the current holder, aid certainty by assuming that all rights were assigned or assignable at that time, no rights left to squabble over.

a) The distributor has made substantial investment in distributing the work, may not be fair to make him go back to get permission from the author when new technology arises.

b) Sunk cost: “money in the can” problem, shouldn’t be forced to pay additional funds.

3) May want to analogize new media to old media: by finding new media subject to similar limitations.

4) May want to privilege public access: by giving all rights to the publisher, ensure that he won’t pull work from distribution because the rights in the underlying work can’t be cleared. No one is helped when transaction costs of clearance are so high that the work is pulled from circulation.

b. Cohen v. Paramount Pictures, 1988, 9th Cir: P gave synch license for song to be included in a movie in 1969. The movie was later released to video. The contract language allows the licensee to record the song and allows for exhibition by means of television. Court held that TV license does not include VCRs and that VCRs were not in the contemplation of the parties in 1969.

1) Court reinforcing the principle that if the medium is not in the contemplation of the parties then the owner didn’t sell the right to do it unless the prose is expansive enough to include future rights.

2) Parties were limited in their knowledge, court has to assume that the contract price was the price for exploiting the work in known media. The assignee didn’t pay for the right to exploit in an unknown media.

3) The result of this holding is that a lot of films with songs will not be available for video release.

c. Bootsey & Hawkes Publishers v. Walt Disney, 2d cir. 1998: Publisher attempting to limit distribution to the original agreement, which restricted performance to ASCAP licensed theatres. Court held the most reasonable reading of the agreement includes release to videotapes, and finds that the ASCAP limitation has no application since theatres are no longer licensed.

1) Boilerplate language: court dismisses the ASCAP theatre requirement because it was standard language at the time. However, at contracting ASCAP fees were used to compensate artist, now that don’t have licensing, artists not getting any fees from Disney. Wouldn’t have been crazy for the court to condition permission on Stravinsky receiving some royalties, would have kept the parties in the same position they bargained for.

d. Contributions to collective works: Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series. (§ 201(c))

1) Tasini v. NYT, 1999: Freelance authors sued the Times for licensing their works to online publications without their permission. Contracts were silent on the issue and had not contemplated online possibilities. Arguments revolve around interpretation of § 201(c):

a) Within the scope of § 201(c): Online versions are just revisions of the original article. NYT licensing whole paper to Lexis. Policy leans toward interpreting contract to include online versions, otherwise effort to track down each author will make useful archiving unavailable or available but very expensive. Don’t need to give the author’s royalties as an incentive for creation.

b) Not within the scope of § 201(c): online publishing is not the same as republishing the whole work. When consumer calls up the article, not calling up the collective work. Digital works provide a clean slate allowing the publisher to profit from licensing the author’s work in a way that conflicts with the author’s expectation of profiting from his own work. The author could individually license his retained rights, the publisher should have to share some of the profit with the author.

i) 2d agreed that online publication was not within the scope of § 201(c): if find that its covered then the residual non-exclusive rights are meaningless to the author, not much left for him to exploit.

(ii) Result is that NYT now requires its freelancers to sign over all of their rights in work for hire contracts.

Duration and Renewal, and Termination of Transfers

Duration and Renewal

1. Have to begin by figuring out when the work was created and if and when it was published

a. Sec 302. Duration of copyright: Works created on or after January 1, 1978: life plus 70 or 95-120 for works for hire.

b. Sec 303. Duration of copyright: Works created but not published or copyrighted before January 1, 1978: these works get the same term as works created after 1978, life plus 70 or 95-120.

1) Exception for older published works close to expiration, copyright last until at least 2002 if unpublished or 2047 if published between 1998 and 2002.

2) Policy: reduces possibility of unconstitutional taking by acknowledging expectation in prior law that copyright begins at publication rather than at creation.

c. Sec 304. Duration of copyright: Subsisting copyrights

1) Extending 56 year term to a 95 year term.

2) Provides for a 28 year initial term followed by 67 year extension term if renewed. 80% of works were not renewed.

3) Legislation in 1992 made renewal automatic for works registered after 1964.

a) 1923-63: 95 year term if at end of initial 28 year term the appropriate person applied for renewal. Anything published before 1963 and not properly renewed is in the public domain.

b) 1964-77: 95 year term, automatic renewal.

4) Copyrights in their Renewal Term at the Time of the Effective Date of the Sonny Bono Copyright Term Extension Act: Any copyright still in its renewal term at the time of the Sonny Bono Copyright Term Extension Act becomes effective [effective Oct. 27, 1998] shall have a copyright term of 95 years from the date the copyright was originally secured.

a) Policy problems:

i) Not encouraging the creation of new works by extending copyright retroactively. If Feist is right, Congress can’t extend copyright to works that aren’t original, then Sonny Bono is unconstitutional to the extent that it gives rights to works that were already created.

(ii) Violates longstanding custom by investing the term in whoever holds the copyright, rather than reverting to the author. The publisher only paid for the term then existing, prior acts had allowed the original author to recapture the copyright.

b) Eldred v. Reno, 2000: P arguing that extension violated the admonition of “limited times” in the Copyright Clause. Court dismisses the case, defers to Congress’ judgment.

i) Retroactive application: hard to question because other renewal term extension have been done in much the same way and gone unquestioned. Don’t want to question previous extensions and throw duration policy into turmoil.

ii) Constitutional problems with taking works out of public domain: public has an expectancy that it gave out a copyright at the end of which it would get an interest and the ability to exploit the work.

iii) Harmonization: goal of extension to harmonize with Berne and EU, doesn’t make sense because work for hire term there is 70 years, here 95.

iv) Economic incentive for exploitation: not sufficient rationale after Feist.

v) Encourage publishers to restore and disseminate older works: hard to prove that copyright is needed to stimulate this, could be stimulated by the same works entering the public domain. Further P in this case prove that there are people interested in meeting this need without an additional copyright right.

vi) Reversionary: extending the period without additional compensation, unique to this bill but to question this could put work for hire doctrine in peril.

Renewal and Derivative Works

1. 1909 Act: gave the author a second chance to make a better bargain. Once the first 28 year term expired, the author could apply for a new 28 year term and resell all of his rights to a new party on better terms. (§ 24). Importantly, the renewal term vest free of any prior commitments. Resulted in 85% of works not being renewed. Renewal was only valid if applied for in the right name at the right time, if not properly filed, no opportunity for cure.

a. Author still living: only he could apply for the renewal.

b. Author dead: surviving spouse and children can apply for renewal.

c. If they died: author’s executor or those named in will could apply for renewal. They would take only if there is no living spouse or children. If not specified, the next of kin entitled to apply for renewal.

2. Renewal term expectancy:

a. Renewal rights are alienable and contracts are enforceable as long as the person making the assignment is the person in whom the renewal term vests.

1) Acts like a contingent remainder, as there is no way to know to whom it will actually vest until the expiration of the initial term.

2) Any party can make a contract to assign their interest, but it will only be valid if at the time of renewal, that person is the party in whom the assignment right vest.

b. The contract must make it clear that the renewal term is being assigned, requires express language that makes the intent to assign the renewal term clear.

1) When corporations didn’t hold the assignment rights at the expiration period, they tried to argue that the work was for hire. (Epoch Producing Corp)

2) Statutory beneficiaries may need extra protection if the author negotiated the first sale in order to protect their interests.

3. 1976 Act: kept renewal term for works registered between 1950-1977, because wanted to honor contracts to assign renewal expectancies and avoid takings claims. Appropriated 1909 Act language in § 304.

4. 1992 Renewal Amendments: made renewals prospectively automatic from 1964-1977 and automatic for any work published 1964 or later.

a. If renewal term claimant applies for the renewal, everything works the same: all of the original contracts go away and must be renegotiated.

b. If renewal term happens automatically: owner takes subject to the exception for derivative works prepared under the first grant. The derivative works exception swallows up what is valuable about the original work.

1) Derivative works may continue to be exploited.

2) Parties can’t renegotiate the terms under which extant derivative works are exploited.

3) Original grant deemed to carry into the renewal term.

5. Derivative Works: if derivative work based on underlying work that expires and goes into the public domain, no problem. But if the author renews and doesn’t contract with the producers of the derivative, those producers can’t make new works or use the work it has already made.

a. Policy: clash between policies permitting the author to renegotiate and those favoring the widest dissemination of works. Although want to advance the interest of authors to have a second chance, really enriching speculators who collect the rights as they terminate. Doesn’t serve its purpose because renewal terms are assignable. Congress could have decided that renewal terms were not assignable, so that the author had to be the one to renegotiate.

b. Later cases held that the proprietor of the derivative work could continue to exploit the underlying work but could not create new works from it. (Rohauer v. Killian, 2d Cir). This led to movie studios disregard of renewal rights.

c. Stuart v. Abend (Rear Window), 1990: Abend was a renewal term speculator that purchased the rights, which were cheap after Rohauer. The Court refused to follow Rohauer. Held that Congress intended for authors and heirs to be able to renegotiate rights, not fair if this can be circumvented just by creation of a derivative work.

1) Important to note that copyright in derivative works only covers the new material, it has no effect whatsoever on the underlying work. It doesn’t give the derivative author exclusive rights beyond what he has added.

2) This case could have kept Rear Window out of the public domain: Abend agreed to license the underlying work to the movie company.

3) Note that the fair use was not put forward seriously here, and quickly dismissed. May have qualified as a transformative use.

d. Russell v. Price, 1979: held the copyrighted status of the derivative work can’t have any effect on the copyright of the underlying work. The pieces involved here were not yet in the public domain, D was showing the work without permission from the copyright owner, an infringement of the underlying works.

Termination of Transfers

1. Policy:

a. Congress decided to get rid of formal renewal for all copyrights because technicalities caused the forfeiture of most copyrights, but they wanted to preserve the reversionary aspect so settled on termination.

b. But may restrict exploitation of creative material: Two artists created Superman, one of them terminated transfer to DC Comics, while the other did not. DC Comics has an undivided ½ interest in Superman. Not clear how to allocate enhancements DC Comics made over the years. Time Warner has been reluctant to exploit the Superman character since unsure about its rights.

2. Compromise between publishers that wanted no reversion and author representatives that wanted unalienable termination rights

a. The right is not alienable, but the author doesn’t have to exercise it.

b. Doesn’t apply to works for hire or grants made by will.

c. Derivative works may continue to be exploited, just can’t produce new works.

a. Mills Music: S. Ct. held that if derivative’s contract is to pay money to the publisher, they can keep paying the publisher not the author. This is true even after termination. Decided in favor of continued exploitation by the publisher, thought to be the best position to provide broad public access.

b. Note that within the two to ten year notice period, the publisher could create and exploit additional derivative works.

d. Complex termination procedures:

1) 5 year window to exercise termination rights.

2) Author or his designates must act affirmatively by serving notice at least two years and no more than ten years before the termination period.

3) If there is more than one owner, can’t exercise terminations rights unless have more than half of them agreeing to terminate.

a) Per stirpes: need more than half of each branch of the interest in order to exercise termination rights.

b) Statutory Beneficiaries: limited, excludes executors or next of kin

4) Post 1978 Copyright Grants covered by § 203:

a) Termination rights arise 35 years after the grant, the author has 5 years to use it or lose it.

b) Only applies to grants made by the author (not works for hire)

5) Pre 1978 Copyright Grants covered by § 304(c):

a) Recapture provision to allow the author to get the benefit of the extended term.

b) Arises in 56th year of copyright, initial owner of the renewal term has a 5 year use it or lose it window to terminate and recapture the additional years.

6) Sonny Bono: determined it was unnecessary to give authors the right to terminate the new 20 year term unless they had terminated when the original grant expired. So the 20 years redounds to the benefit of the assignee, didn’t want publishers to have to work through this twice.

Formalities

Publication and Notice Before the 1976 Act

1. Policy: copyright is a bargain between the public and creators to incent new works of authorship don’t want to give out rights when they are not needed to incent new works because exclusive rights tend to diminish access and the public’s ability to use the works. In this context, notice makes sense because want copyright owners to indicate to others when work was freely available. Here the court is the guardian of the public interest insuring that it gets its share of the copyright bargain.

a. US is a proud defender of formalities: led to works from other countries falling into the public domain because couldn’t comply.

b. US is a net exporter of copyrighted works: willing to give up formalities to increase this benefit under Berne. Didn’t really give up much, since courts are reluctant to enforce, makes Berne just cosmetic.

c. Shift in attitude: now concerned more with protecting copyright owners from pirates.

1) US has broader universe of copyrightability with its low originality and creativity bar. Only limited by who cares enough to go through the steps to secure copyright protection. Result is that works have been removed from the public domain, whether or not they have real value worth protecting.

2) Feist is an effort to limit the scope of protection by placing a higher bar on originality.

3) Old attitude of copyright’s bargain to incent works for the public benefit is obsolete: now believe that commodification encourages the widest possible distribution. Want to ensure that copyright holders can earn profits from access, believe that distributors will invest in finding the works and the customers.

2. Formalities have loosened up over the last century:

a. Requirement that works copyrighted in the US be printed here was vetoed by Reagan in 1985.

b. 1909 Act: publication with notice entitles the author to copyright, based on dissemination to the public. If the work was published without notice it fell into the public domain, placed the onus on the author to notify the public.

1) § 19 required the word copyright, name of owner, date, year of first publication (not creation).

2) § 20 required notice be placed on the title page or the following page.

3) Any substantial deviation from these rules was fatal.

a) Placement: court held notice on the backcover of a pamphlet resulted in publication without notice, so not copyrighted.

b) Name: initially held that the name must be of the owner at that moment. Later loosened up to allow corporations to use their name as alter egos and pseudonyms.

c) Collections: allowed single notice in a collection.

d) Derivatives: allowed the name of just the author and date of publication of the derivative.

e) Date errors: not fatal, if earlier, count from first year and end earlier. If later, count from when the work came into public distribution. Don’t want to deceive the public into believing the copyright will last longer.

3. Publication:

a. Invested publication: transfer of a single copy with notice was sufficient to allow the author to register copyright.

b. Divested publication: terminated copyright, putting works into the public domain without notice.

1) Courts were reluctant to allow transfer of one work to remove copyright protection. Would prefer to avoid a forfeiture of copyright in works before they were exploited commercially. Don’t want to penalize unsophisticated authors for failing to put notice on the first copies that left their hands.

a) Limited publication: distribution to a group for a limited purpose.

b) General publication: unlimited as to the recipient or as to the purpose.

2) Estate of Martin Luther King, Jr. v. CBS, Inc., 1998: Copies of King’s “I Have a Dream” speech were made available to the press before the march and later republished in the SCLC Newsletter without copyright notice. The court held that the transfer of copies to such a wide audience was general publication and put the speech in the public domain.

A. 1976 Act Solutions as to Publication and Notice

1. “Publication”: Definition and Context

a. Definition: the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication. (§ 101)

1) The statute doesn’t define distribution: but it remains an important pre-Berne indicator because publication of the work triggers the obligation to deposit a copy with the Library of Congress.

2) ER Live: encourage people to tape, no copies were distributed, but copies in the public domain were authorized by the copyright owner. Not clear if this is distribution since public performance is not enough.

b. Courts have translated the 1976 as declarative of prior law

1) Limited v. General Publication: distinction still part of determining publication.

2) Investive v. Divestive: doesn’t count anymore. A work is either published or its not.

3) Publication requires the authority and consent of the copyright owner.

2. The Notice Requirement: 1978 to March 1989

a. Works first published before 1989 need notice:

1) Copyrighted works need (c), name, and date (year of first publication).

2) Phonorecord works need (p), name, and date (since music is not copied).

b. § 401 Visually Perceptible Copies and §402 Phonorecords of sound recordings

1) Distinguishing sound recordings and phonorecords: sound recording is a copyrightable work, a phonorecord is the medium in which it is fixed. So a CD contains two protectible works: the phonorecord and the underlying music.

2) The owner of the work has the right to distribute both, but law has not required notice of copyright in addition to phonorecords. Sound recordings require a (p), but it’s a historical accident that phonorecords were not thought to be a copy so don’t need a (c). So don’t have to put copyright notice on phonorecords in order to protect them.

3) Works are published whether in copies or phonorecords: when published in copies, needs a notice, as well as when published in phonorecords. Until 1971, only needed notice on phonorecords, then statute amended to add sound recordings, making them copyrightable for the first time. Because Congress didn’t want to cause prior published works to go into the public domain, it didn’t require copyright notice on phonorecords or decide to call them copies.

c. § 405 Omission of notice on certain copies and phonorecords: lack of notice is OK if:

1) Omitted from only a small number of copies.

2) Registered within 5 years of publication without notice and made a reasonable effort to add notice to copies published after the omission was discovered.

3) Notice has been omitted in violation of an express requirement in writing that, as a condition of the copyright owner’s authorization of the public distribution of copies or phonorecords, they bear the prescribed notice.

d. § 406 Error in name or date on certain copies and phonorecords: copyright will continue to be valid even if incorrect notice is given:

1) But the copyright holder will not be able to recover from an innocent infringer who got a license from the wrong holder, unless he has recorded his name in the copyright office prior to the infringement.

2) If an earlier date is incorrectly posted on a work for hire, it will lose the years, dated from when enter distribution.

3) If an earlier date is incorrectly posted for an individual work, doesn’t matter because copyright still extends to 70 years after the death of the author without regard to the year of notice.

4) If the posted date is more than a year after publication, refer to § 405 to cure.

5) The copyright notice is still valid even if it lacks name and date of notice, refer to § 405 to cure.

e. All of these exceptions made copyright notice unreliable. The public could not assume that works published without notice were in the public domain, still had to search to determine if an omission of notice had been cured.

f. There have been no formal requirements since March of 1989 when the US entered the Berne Convention in an effort to align US copyright law with the rest of the world.

1) Continuing US anomolies:

a) Alienability of copyright

b) Employer can be an author and exercise the author’s rights

2) Incentives to use notice:

a) Prevent others from being able to claim that they are innocent, good faith infringers. (Can’t be a good faith infringer if relying on lack of notice when notice is not required). Primarily applies to businesses with little experience in copyright, or if D got a license from an infringer.

b) Of course this incentive is weakened in industries commonly protected by copyright, because infringers should be on notice to check for cure.

Deposit and Registration

1. Deposit in Library of Congress

a. Copyright holders must deposit two complete copies within three months of publication. (§ 407)

b. The Library can fine those who fail to deposit (§ 407(d))

c. Now that registration is permissive, hinders the collection of works.

2. Registration

a. Procedure:

1) Permissive, however, if the copyrightholder is a US Citizen and the work is first published in the US, he won’t be able to sue until the work is registered.

2) Don’t have to register at any particular time, can register the day before going to court.

3) There has been no significant drop off in registration since 1989.

b. Register’s Authority and Effects of Registration:

1) For works published before 1989, has curative effect on notice defects.

2) Evidentiary value of certificate of registration: establishes rebuttable presumption that copyright is valid. Shifts the burden of proof to D to disprove validity of copyright. Relieves P of having to prove that his copyright is valid, or that his work is original, he just has to prove it was copied.

3) Copyright holders can only recover attorney’s fees and damages occurring after registration.

4) Courts still harbor the belief that if the work is not registered, it is not covered by copyright.

5) Must be registered in order to receive compulsory licensing fees.

6) Pre-Berne, only US Citizens and nationals need to register to sue.

III. Exclusive Rights Under Copyright

A. The Right to Reproduce the Work in Copies and Phonorecords Under § 106(1)

1. The Right to Make Copies: the fundamental copyright right.

a. What is a copy?

1) Definition: material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecord, in which the work is first fixed. (§ 101).

2) Technological implications: allows perception from other than material objects. Star pagination is not a copy. (Matthew Bender v. West). Reverse engineering creates intermediate copies that are not perceived by humans. If confine copy to fixation in some form then have problem of whether RAM fixation creates a copy.

b. Proving Infringement: the party that has the burden of proof will likely lose because difficult to prove infringement. Difficult for Ds to protect themselves because have low originality standard for copyright but have de facto novelty test for infringement.

1) P must prove: that D copied the stuff that copyright protects – expression, not ideas.

a) Similarities between the first and second work: some courts define in gradations, rather than the absolute. Only provides circumstantial evidence of copying. Strong evidence of similarity can compensate for weak evidence of access. Intent doesn’t matter.

i) Striking similarity: may be enough if the similarity is so remarkable that no other plausible explanation besides copying makes sense. Becomes prima facie evidence of copying. Similarities are complex and on more than one level.

ii) Substantial similarity: similarities sufficiently substantial to support an inference that D copied Ps work. Could result from a similar common source.

iii) Similarity to a lay observer: dominant test. Once get their reaction, have to determine if similar elements are protectible, copying is only actionable if copying protected expression.

A) Problems: underinclusive because infringers can fool ordinary observer by introducing obvious dissimilarities. Overinclusive because includes unprotectible elements like facts in biographies. Expensive because requires going to trial and getting beyond summary judgment.

B) Benefits: easy to instruct a jury, though won’t know how they reached their result. Market sensitive, looking at the intended audience, capturing situation where the copied work is likely to do real damage to the original work.

iv) Expert analysis: advantage over lay observer because can’t be duped by incidental similarity. But may miss overarching sameness by looking just at minute details.

v) Threshold similarity: rely on experts to determine if two songs are similar. (J. Frank in Arnstein v. Porter, 1946).

vi) Wrongful similarity: relies on lay observers in the target audience to determine if amount copied was excessive and harmful to first author. (J. Frank in Arnstein v. Porter)

vii) Altai test: levels of abstractions used to distinguish between idea and expression. Narrows the record to stipulated comparisons between particular pieces of software. Goes through filtration at each level of abstraction. At a high level, everything is filtered out. At a low level (code), nothing will be filtered out. Looking for similarity as an indicator of copying in computer code requires an expert in design.

b) Access by the second authors to the first work. Just have to prove that D had access and some reasonable opportunity to view or hear the first work, don’t have to prove that D actually saw or heard it.

i) Strong evidence of access can compensate for weak evidence of similarity.

ii) Highest degree of access is when have two works by the same author as in Fogerty case, can infer unconscious copying. Want policy to allow authors to continue creating.

2) D can rebut proof by:

a) Providing a public domain source that it copied from: the law says that if two works are exactly the same, but independently derived, then there is no infringement. This serves as the underlying rule, though usually decided differently.

c. Cases: once prove that D has copied, then have to prove that what he copied was protectible.

1) Bright Tunes Music Corp. v. Harrisongs Music, 1976: George Harrison’s song was similar to a top 40 hit in Europe and America. Evidence that Harrison had access to the first song. Similarity not at the striking level. Court believes Harrison didn’t intend to infringe, but intent not an element in the statute. Court allows strong evidence of access to compensate for weak evidence of similarity.

2) Peter Pan Fabrics, v. Martin Weiner Corp, 1960: applying the idea/expression dichotomy to works without words. Finding that the works are similar, but not completely identical. Find similarity on a spectrum rather than a hard line. Test is whether the ordinary observer would look at the two designs and be disposed to overlook the dissimilarities between them, and regard their aesthetic appeal as the same.

3) Herbert Rosenthal Jewelry Corp. v. Kalpakian, 1971: jeweler created bee pens, another jeweler created similar pins. Court held that even if D had copied directly from P there is no infringement because the bee pin is an idea and the similarities, even if copied, were necessary to express that idea.

4) ETS v. Katzman, 1986: ETS sued Princeton Review because its test prep materials included questions substantially similar to those on their tests. Though the court finds substantial similarity not sure that PR is precluded from using similar questions as long as they are not directly copied. The court finds that PR can use the same structure, just not the same wording or substantially similar wording. In the case of the math questions, some argue that should be an idea/method under 102(b) and capable of copying in whole under the merger doctrine.

5) Nichols v. Universal Pictures Corp., 1930: Court assumes that D copied parts of Ps play and that these parts were original with P, but finds no infringement since this was a common plot idea and the characters were stereotypes. Hand argued that some parts of works go into the public domain as soon as they are created. Found that D took mainly ideas rather than expression. At a certain level of generality cross the line from expression into ideas.

2. The Right to Make Phonorecords

a. Musical Compositions: The compulsory license for making and distributing phonorecords under § 115

1) General rule: only the copyright owner may reproduce the work in phonorecords or authorize others to do so.

2) Policy: license invented because one company, Aolian, in anticipation that Congress would authorize licensing piano rolls, bought up all of the rights. Needed to create a compulsory license to ensure that the music would be released. This statute was a political compromise between rights holders and user interests, though it is not generally relied upon.

3) The compulsory license in § 115 provides that:

a) The owner has an unrestricted exclusive right to reproduce the work in copies

b) The owner has an exclusive right to reproduce the work in phonorecords the first time only: after he releases the first copy, anyone who wants to release the work to the public for home use is entitled to, the owner must provide a compulsory license.

c) The party taking the compulsory license must notify the owner within 30 days, late notice will not be allowed, will constitute infringement.

d) The licensee must send monthly accounts, failure to do so also constitutes infringement. Record companies are not set up to do this reporting, why they don’t take compulsory licenses.

e) Doesn’t permit changes to the basic melody or fundamental character of the work. Though musical rearrangements are not copyrightable, if not prohibited, could be original authorship. If going beyond rearrangements, could constitute an unlawful derivative work.

b. The Harry Fox Agency

1) Harry Fox as the wholly owned subsidiary of the National Music Publishers Assoc. negotiates licenses and forms contracts.

2) Terms: replaces the statutory requirements of notice served on the copyright holder with notice to the Fox Agency.

3) Accounting notice: only have to account quarterly rather than monthly.

4) Provides advantages to:

a) Record Company: lower transaction cost.

b) Fox: gets a cut off the top.

c) Music Publishers: derivative works exception to termination of transfers and automatic renewals redounds to their benefit because contractual arrangements involving intermediary licensors survives termination. Harry Fox pays the publishers directly, the composer only gets a portion if the publisher has a contract to make the payment. (Mills Music). This exception doesn't apply to compulsory licenses where the renewal and transfer rights go back to the author.

c. § 114 Limits exclusive right to copy sound recordings

1) No direct recording or dubbing of actual sound.

2) No right to prevent imitation as long as pay Harry Fox license or compulsory fee, and not taking directly from the sound recording.

3) It is an infringement to make a pirate recording by recording directly from a phonorecord.

4) It is an infringement to engage in digital sampling if sample above a certain amount.

d. § 1008 limits exclusive right to reproduce either musical works or sound recordings

1) The Audio Home Recording Act: created and passed by the music industry in response to threat of digital music distribution. Resulted in stifling of DAT market developing.

2) Requires manufacturers to put copy protection devices on hardware and pay compulsory royalty fees:

a) Developed specifications for the Serial Copyright Management System (SCMS). Limits machines to only copying originals, can’t make copies of copies.

b) Manufacturers of DAT machines have to pay 2% of wholesale price, plus 3% of each tape sold. They then give 2/3 of the funds to record companies and performers and 1/3 to writers and publishers.

3) Provides consumers who privately make home copies immunity from copyright infringement prosecutions.

4) Treatment of private consumer copying is portentious: consumers are entitled to make an unlimited number of non-commercial copies for home use. There are no legal constraints to this use, but placing technological constraints on with the SCMS system.

B. The Right to Prepare Derivative Works Under § 106(2)

1. The Scope of the Derivative Works Right

a. A derivative work must:

1) Incorporate copyrightable elements of the underlying work: if it doesn’t it is not a derivative work and its not infringing.

2) Include some original authorship: if not may infringe the right to make copies, rather then the derivative work right.

3) Infringing copies must be fixed, but it is not clear if infringing derivative works must be fixed: if taken literally means a derivative work can infringe the original work just by imagining its use.

b. Horgan v. MacMillan, 2d Cir. 1986: court held that a book of pictures of the ballet incorporated the choreographer’s expression along with original expression from the book’s author. Uses the ordinary observer standard. Holds out possibility that use of the prior work was de minimis.

c. Micro Star v. Formgen, 1998, 9th Cir: D took derivative games encouraged by the original author and combined them for resale. Judge Kosinski held that this work was not a derivative because a derivative work requires a combination of original authorship and Ps underlying expression in some transitory concrete form.

1) The derivative works by players could be assumed to made under a license that prohibits marketing them commercially, beyond the scope of the license.

2) Or it isn’t licensed, so the game company can not assert the licenses of the players.

3) Later case found a derivative work even though the distributor had not applied any original authorship. Other circuits refused to go along with this.

d. Lee v. A.R.T., 1997, 7th Cir: D cut up tiles from artwork it purchased, glued them together and resold them. The court held this was not a derivative work because it lacked original authorship. Refuses to adopt the loser 9th Cir. Standard.

e. National Geographic Society v. Classified Geographic, 1939: D bought magazines, then cut and paste into new compilations. The court used a low threshold for originality to find that there was original authorship in the selection and arrangement of old articles.

f. Futuredontics v. Applied Anagramics, 1998: involved Internet Framing where the code instructs the browser to transmit the image from the underlying site at the same time as the frame. The court is not sure if this states a claim so willing to grant a preliminary injunction. If just strip out the URL and add a frame may not constitute enough original authorship. But don’t want to focus on the quality of the frame, these claims may best be brought under Trademark Law.

g. Paramount Pictures v. Video Broadcasting Sys., 1989: D adds his commercials to Ps tape. P sues for infringement through creation of an unauthorized work. P loses because the court assimilates this to putting two pictures together rather than a derivative work. Litman would have held for the movie company, looks like not creating a new work but rather transforming an underlying work.

2. Moral Rights

a. Statutory Rights: statute gives the author the right to authorize derivative works. The author is permitted to put any conditions on the work as long as he owns the copyright, but once he assigns the copyright, the derivative work right goes with it.

b. Other countries: allow authors to retain the right to monitor the integrity of later uses even after the commercial rights have been assigned. Sometimes this is waivable, though it is inalienable.

c. In US: copyrights are primarily owned by employers and assignees, don’t want to give the author the right to interfere once she has sold the right to someone else. U.S. copyright law based on the notion that copyrights are completely alienable and assignable.

d. Berne Convention: need to harmonize US with foreign copyright law. Berne requires all member countries to protect moral rights, right to paternity, and right to integrity.

1) US argued that it already protected moral rights, though don’t do it under copyright law. WIPO let these assertions stand in return for US removing formality requirements for foreigners.

a) Gilliam v. ABC, 1976: Court held ABC liable to Monty Python for bad editing job under the trademark statute 43(a) Lanham Act. Didn’t matter if Monty Python held the copyright, ABC was still liable for actionable mutilation.

b) Derivative Works Right: has the flavor of moral rights because allows author to limit later use of his work. Cited by US as evidence that it recognized moral rights.

c) Federal Protection of Moral Rights: notice added to videos “this film has been formatted to your screen”. Also have integrity rights for visual artists and sculptors. Weak and limited legislation that doesn’t accord any meaningful protection. Allows artists to stop others from defacing their works but not much else.

i) Carter v. Helmsely-Spear: workers put artwork in a building that was later sold. The new owner wanted to get rid of the art. The workers sued under VARA, the court held that the work was for hire, so VARA doesn’t apply, the owners can do what they want. The workers would have been better off if they had contracted for respect for moral rights.

2) Berne only required that moral rights be separate, not that they be alienable, so the US could have recognized moral rights but required that they be alienable. Still concerned about interference with use of assigned works by meddling authors. Publishers don’t want a cloud on their ability to exploit commercial rights.

3) No suits permitted under Berne Treaty, must sue under Copyright Statute. Those that have tried to assert that Berne was self-executing in order to get moral rights recognized have had little luck.

C. The Right to Distribute Under § 106(3)

1. Purpose: gives the exclusive right to the owner to distribute to the public by sale, copy, or lending. The author has the exclusive right to make and transfer copies. Though these rights are limited by the first sale doctrine.

2. The First Sale Doctrine (Exhaustion of the Distribution Right), and its Exceptions § 109

a. Doctrine: the purchaser or owner of the copy is entitled to resale or transfer that copy though he can’t make a copy, derivative work, or exercise copyright rights. Once the copyright owner has authorized distribution of that copy, the distribution rights are exhausted.

1) Judge made doctrine: if we didn’t have it would have no galleries, libraries, video rental stores, museums.

2) Prevents differential pricing based on use.

b. Policy: this doctrine allows access to works and corresponds with the deeply held belief that once you have paid for a copy you are entitled to use it and dispose of it as you like.

1) Fawcett Publications v. Elliot Publishing, 1942: held that author’s rights were limited by the first sale doctrine because the author has already been compensated for the discounted future probability of the work becoming more valuable or worthless since the transferee is paying for the right to possess and resell, accounted for in the price of the work. Arguing that need this doctrine in order to encourage buying of currently low valued works.

c. Limited by the Record and Software Rental Act, codified in § 109B: if the material object in which your work is fixed is a phonorecord or a computer program, can’t rent it out unless to a non-profit library. Can still sell it, give it away, loan it out non-commercially, the only use prevented is rental.

d. Attempts to avoid the First Sale Doctrine: by denominating the transaction a license rather than a sale. We own it, you possess. Done through shrink wrap licensing. Matter of state law. UCITA an attempt to make shrink wrap licenses enforceable as licenses rather than as sales.

1) The first sale doctrine is not limited by licensing: applies to the possession of a copy, doesn’t require ownership. (109). The first sale doctrine applies to ownership of the copy, not ownership of the work.

a) Bobs Merrill: invalidated license purporting to set conditions of resale on a book, said the copyright owner has not right to do this.

2) Preemption problem: state law shouldn’t overwhelm federal law, which mandates the first sale doctrine.

3) Technology is rendering the first sale doctrine irrelevant: allows distribution of copies but restricts later use. Need to find some new privilege that duplicates the freedom to share, without unduly undercutting the copyright owner’s rights. May not care if lower costs permits wider distribution, this may fulfill the purpose of copyright policy.

a) May avoid transfering tangible goods altogether: Stephen King e-book test evaded the first sale doctrine by preventing printing, saving or transfer.

3. The § 602(a) Importation Right, and Its Relationship to the Distribution Right

a. The first sale doctrine trumps the importation rights.

1) Quality King Distributors v. L’Anza Research, 1998: D bought Ps products abroad and sold to discount retailers in the US, who undersold their beauty salon business. P sued for a violation of the 602 importation right, based on the label’s copyright. S. Ct. held that after the first sale the owner has no further distribution rights in that copy. The exclusive rights in 106 are only limited by 107 through 120.

D. Rights of Public Performance and Display Under § 106(4), (5)

1. The Meaning of “Perform” Under the 1976 Act

a. History: not an original copyright right, had previously limited rights to reproduction and vending. First given to plays in mid-19th Century, then to musical compositions. In 1909 Act, copyright owners given the right to perform works publicly for profit. An unauthorized public performance of music infringed this right. There was still no right to publicly perform a novel.

b. Definition: to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible. (101)

1) Under 1909 Act had distinguished between those who performed a work and those who merely listened to or viewed the work by turning on the TV or radio.

2) 106 only gives copyright owners control over public performances, doesn’t apply to private home playing.

2. “Public” Performances Under the 1976 Act

a. History: initial interpretation problem when performer is in one place and listeners are elsewhere receiving it. Courts held that transmitting performances to members of the public was a public performance.

b. Definition:

1) To perform or display it at a place open to the public or at any place where a substantial number of persons outside of a nominal circle of a family and its social acquaintances is gathered; or

2) To transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

c. Interpretation: have to determine if this is limited to the familial circle or the quantity of people.

1) Columbia Pictures v. Aveco, 1986, 3d Cir: P sued D a video store with private viewing rooms. Court held D liable for infringement because although the rooms were private, the store authorized the performances pursuant to 106. The store is open to the public even though the rooms are private for the period of rental.

2) Blockbuster doesn’t publicly perform because the videos are rented for home use.

3. Performing Rights Societies

a. History: the three societies, ASCAP, BMI, SESAC, were formed because it was not practical for composers to go out and enforce their copyrights. They joined these groups and assign a non-exclusive public performance right, which allows the groups to sue on their behalf. In 80 years have won almost all cases.

b. Licenses are cheap: can get all by paying less than $500 per year, while litigation is expensive. Have to buy from all three societies to make sure all music is covered. Venues and people can buy licenses.

1) ASCAP controls 60% of all music

2) SESAC controls almost all country and devotional music

3) BMI has the balance.

c. Funds are distributed to artists in rough proportion to radio spins based on sampling.

d. Exceptions:

1) 110(5A): for playing TV and radio in restaurants and bars without a license, does not apply to live music. Limited by size of venue. Also have exemption for agricultural fairs.

a) Pre-Sonny Bono, covers transmissions in homes.

b) Also permits use if have a business with a TV or radio as long as the equipment is similar to that used in the home.

2) 110(5B): covers only performance of a transmission, includes TV and radio, not CDs. Expanded by Sonny Bono to any business that has less than 2,000 gross sq. ft. of space. An establishment with more space, but uses not more than 6 loudspeakers, no more than 4 in any one room, no more than 4 TV monitors – one per room, with diagonal screen of 55” or less.

a) Covers any restaurant or bar other than a sports bar: which tend to have more than one monitor per room.

b) Businesses can’t charge to hear music or see the programs directly, can’t further transmit the broadcast.

c) The original broadcast must be licensed.

3) 110(7): allows performance or display in connection with the sale of the thing that is being displayed and sold. Broadened by Sonny Bono, extends the privilege to stereo and TV stores but only for the music. Don’t have privilege to play the picture, go back to 110(5) for this. Not covered, but there is no performing rights societies for motion pictures yet.

4. The Right of Public Display

a. Limited by the first sale doctrine, 109(c), which provides that display to the public by the purchaser is authorized as long as it is not broadcast and it is displayed by the owner, not borrower or renter.

1) WWW Pages: images often owned by someone else, it is a violation of the copyright owners public display right, if reproduction right is read broadly. Though usually implicates the reproduction right more than the display right.

2) 109(c): allows the owner to display the copy publicly as long as the viewer and the copy are in the same room, can’t transmit the copy.

b. Infringement: any unauthorized performance or display, though there are a number of exceptions.

1) 110: 1976 Act substitute for 1909 for profit limitation: non-commercial uses delimited, if fall within exemption use is OK.

a) Permits classroom performance or display in course of face to face teaching activities.

b) Allows a government or non-profit school to transmit non-dramatic works as part of a systematic program of instruction to a class or to disabled students or government employees.

i) Controversial as applied to distance learning: performance and transmission may be OK but may not privilege the copy or making of the copy or transmission.

ii) 112 says if entitled to do the performance, can make the copy necessary to carry it out, but some argue that this is limited to cable broadcasting. (issue for suit)

c) Religious work can be publicly performed at a place of worship in the course of services and any work can be displayed at a place of worship in the course of services. Can’t stage a concert during off hours and come within the exception.

d) Permits performance but not transmission or display of non-dramatic musical works without commercial advantage or payment by anyone, or with a charge but payment to educational, public, or religious purposes. If not paying the copyright owner can’t pay anyone else either.

e) Additional limited privileges:

i) Performing or displaying to the disabled.

ii) Performances by veterans.

iii) Performances at agricultural fairs.

2) 111: Cable TV license.

3) 116: Jukebox.

4) 118: Public TV.

5) 119: Satellite: limited to particular industries.

c. Dramatic Works: Copyright holders generally have full performance right, can destroy a play’s market by performing it for free, so important for the authors of plays to have control over any performances of their works. But since most theatres operate at a loss, don’t want to limit performance right for profit in the 1976 Act.

5. The Digital Performance Right in Sound Recordings…and its Limitations

a. 106(6): sound recording copyright owners have no performance rights to control performances in discos, but do have rights over transmissions of their works because can substitute for the sale of recorded music.

b. Subject to exemptions and compulsory licenses: right to collect remuneration.

1) Dispute over which Internet uses are exempt, which are subject to licenses and which are outright infringing.

2) Amendment was added 18 months ago, but already technologically obsolete.

IV. Fair Use

A. Background

1. Fair use has been the repository for all unauthorized uses not excused by a statutory exemption that we don’t want to classify as infringing. No clear rules, muddy, unpredictable because resolved on a case by case basis. Originally articulated by Justice Story in 1841, now codified in 107.

a. Implied License: assume owner would say this is OK, so not going to make the user ask.

b. Uses the owner would certainly say no to, won’t make the user go to the trouble of asking.

1) Criticism

2) Parody

3) Confirming research

c. Uses the owner might not consent to, but that won’t do any meaningful harm: like limited copying for classroom use

2. Policy: how fair use is analyzed will depend on:

a. Why the user is making the use?

b. Why we might want to permit uses like this?

c. What relationship the factual circumstance has to these uses?

3. § 107: controversy about how to codify fair use, don’t want to limit the doctrine by articulating express fair use rights. Language vagues everything out:

a. Fair Use Factors: note that fair use is an equitable rule of reason. In doing the analysis, must weigh the owner’s interests, Ds interests, and the public’s interests to come up with the best decision about the use of the work.

1) Purpose and character of the use: balance commercial and non-commercial.

2) Nature of the copyrighted work: if its research, factual, small amount of whole contained in second work, more susceptible to fair use. Expect people to learn from it.

3) Amount and substantiality of the portion used: importance of this factor will depend on the use.

4) Effect of the use on particular market for and value of the work

a) The fact that the work is unpublished does not bar a finding of fair use if made in consideration of the above factors.

b. House Report: clarifies that the enumerated factors are illustrative, not exclusive. Trying to capture the doctrine in prose without changing its meaning in any way. Wants fair use to continue evolving through judicial interpretation.

4. Stress on fair use doctrine:

a. 1976 Act provided little in the way of general principles: if the owner has the exclusive right to make copies, any copy not in an express exemption is prima facie infringement unless it is fair use.

b. Deliberately drafted so that new and old technology covered on the same terms: but new technologies weren’t covered by express exemptions so only possible privilege is fair use.

c. Now fear that non-commercial uses could overwhelm commercial markets, less politically feasible to enact exemptions in this area.

The Application of the Fair Use Doctrine to the Creation of New Works

1. Parody:

a. Application of the fair use factors:

1) Purpose of Ds use: parody, a humorous form of criticism, commercial rather than non-profit/eduational.

2) Nature of Ps work: tends to be well known and popular or else not appropriate.

3) Amount Taken: tends to focus on this factor. If take a whole lot, not parody, just imitation. If take too little, no one will know what you are parodying. Courts try to determine if D took more than necessary.

4) Effect on the Market: parody will never fulfill demand for the original, but it may tarnish the original.

b. Campbell v. Acuff-Rose Music, 1994: dispute over 2 Live Crew’s spoof of Roy Orbison’s Pretty Woman. Supreme Court emphasized that there was no presumption against commercial fair use. Took back holding in Harper & Row.

1) Purpose of Ds use: fair use available for commercial parody, but first have to establish that the second work is a parody of the first. Majority finds that this work has enough of a critical element to qualify as parody, transformative of the first work.

a) Don’t want judges in the business of judging humor: court should limit itself to asking if the parodic character may be reasonably received.

b) There is enough criticism in these lyrics to qualify.

2) Nature of Ps work: Purely entertainment material, meant to be consumed to make money.

a) Implied consent weak in these circumstances: the fact that the song was popular would normally count against fair use.

b) Forced consent rationale: makes sense here because most parodies target works that don’t want to be made fun of.

3) Amount Taken: Parody will normally take qualitatively important parts. Have to look not just at what D took but what he added. Here lyrics transformed the first song, but underlying music was a closer questions, remanded for determination.

4) Effect on value of the copyrighted work: often seen as the most important factor.

a) The greater the harm on Ps market, the less likely he is to authorize the use.

b) Circular:

i) The fact that D used Ps work proves there is a market of some sort to be exploited.

(ii) If decide that a license is required, then there is an effect on the market.

(iii) If Ds use is commercial then of course there is a market

c) Souter removes presumption of harm from commercial use. Fair use is an affirmative defense, burden of proof is on D to provide evidence. While P must introduce evidence that markets actually exist.

i) First time actual evidence of damage has been required.

ii) Noting that criticism as damage is not cognizable.

iii) Copyright doesn’t protect the market for licensed critical uses: assumes the owner is not likely to license these uses. The fact that other parodist get licenses, does not require all others to take these licenses.

c. Castlerock Entertainment v. Carol Publishing Group: Involved the Seinfeld Aptitude Test (SAT). Found that this was not a parody. Moral is that just because someone claims that their work is a parody doesn’t mean that it is.

d. Snow White, 1989: Academy Awards show used Snow White Imitator as spoof. Disney filed for copyright infringement. The parties settled.

1) Purpose of the use: commercial, attracting audience for its show. Not clear if it is a parody or a rip off.

a) Defining transformative use is difficult: fair use analysis is fact specific, no one has been able to create a clear line.

2) Amount taken: took costume, high squeaky voice. Could argue that didn’t take enough to pass the Arnstein substantial similarity test. Might stop here before getting to the fair use analysis.

a) Didn’t take the plot.

b) The name Snow White was not original to Disney.

c) Didn’t take all expressive features of the costume.

3) Effect on Ps market: tarnished purity and good taste. Portrayed Snow White as a tramp. It was in bad taste, but not clear that this can expose you to copyright infringement. More dispositive of the parody element.

a) Before Campbell courts thought this was the most important factor.

b) As a matter of law, there is no market for parodic uses: as long as the parodic character can be reasonably perceived, D still has the burden of proving whether their use is supplanting a different market even though the rap version is a parody.

c) Disney may have been able to argue that if Oscar had properly licensed, it would have had the proceeds from that use. But it lost from the market because it did not license. (Note this can be circular, courts limit to traditional and customary licensed uses, but if this is criticism, may be a forced use since the author wouldn’t normally consent).

e. Saturday Night Live Skit in response to Oscars:

1) Purpose of Ds use: A parodic character can be perceived, but not exactly parodying Snow White. The point of the parody is to come after Disney.

2) Amount taken: took more than Oscars, but may have needed more in order to make the parody work. Disney might argue that its not a parody, just a rip off..

2. Harper & Row Publishers v. Nation Enterprises, 1985: dispute over the Nation magazines publication of significant excerpts from Ford’s biography before the authorized publication in Time. Everything in Harper and Row is bad law except for its holding that copyright and 1st Amend don’t conflict.

a. First Amendment implications: Ct. of Appeals held in favor of Nation because they published memoirs of a President discussing his official actions, core first amendment speech that should be granted fair use. The S. Ct. disagreed by noting that the idea/expression distinction removes any 1st Amend conflict since copyright protects his expression, Ford’s right to choose not to speak or to speak only in the forum of his choosing.

1) Litman notes that its tempting to construe fair use narrowly on the ground that the idea/expression distinction takes care of things, while interpreting the idea/expression distinction narrowly. Results in failure of the safety valves. Each one is relying on the other to take up the slack.

2) If had recognized that what the Nation stole were unprotected facts, then they could have printed them. But since protected them under copyright law, the only way to release them to the public is to force them out through the First Amendment. Important for copyright not to be too expansively interpreted to cover facts, result is that have to fight to bring these facts in the public domain through other means.

b. Fair Use Factors: the preamble notes that fair use applies to news reporting, which is what this is.

1) Purpose of Ds use: to convey information. This is commercial news reporting rather than educational and non-commercial reporting. O’Connor here still believes commercial use is presumptively unfair, if the user stands to profit he should pay for a license.

a) It was clear that Congress didn’t include a commercial use presumption: enumerated both non-profit and commercial uses (including reporting). And denied any attempt to create a for profit limitation. (House Report).

b) Intuitive appeal: most tend to think that non-commercial use is non-infringing, only OK for personal use.

c) Bad faith: a lot of invective in the decision about Nation purloining the manuscript from Time.

2) Nature of Ps work: factual work of a historical figure, autobiography, but it was unpublished. The right to fair use at this time was narrow with respect to published works.

3) Amount taken: small amount taken, 300 words from 500 page book. Constituted only 13% of the Nation’s article. But he took the most interesting parts. Qualitatively the taking was substantial.

4) Affect on the market: Time cancelled publication of serial so had a substantial financial effect.

a) The information was not copyrightable, the damage was caused by disclosure of unprotected facts. Actionable in breach of contract, but not effect on the market cause by copyright.

b) Damage was presumed here since Nation’s reporting was commercial: Harper & Row wins based on the presumption of harm from commercial use.

5) Adoption of presumptions about pre and post publication fair use have been abandoned. Congress overruled the pre publication presumption against fair use by adding the final sentence at the end of 107.

c. Brennan dissent: argues that the Nation took unprotectible facts and very little expression. This is not copyright infringement. Majority over compensating for the taking of valuable material. Mucking up copyright law by unreasonably narrowing the fair use privilege.

1) Commercial use/pre publication fair use presumptions are unwarranted, inconsistent with the statute, and unfaithful to congressional intent.

2) Suggest majority could only have reached their decision by ignoring the idea/expression distinction and blaming D for taking unprotected facts.

3) Brennan proved right in history: O’Connor opinion in Feist cites this dissent for support.

3. Sega v. Accolade, 1992: dispute over Accolade’s reverse engineering of the Sega console to create interoperable, competing video games. Not possible to reverse engineer software without making copies. The Court held that intermediate copying for reverse engineering purposes, to discover the underlying program, is not infringing.

a. Don’t get to a fair use analysis unless first prove infringement. Issue is whether Accolade ought to be able to get around Sega’s initialization code.

1) § 117 Limits on exclusive rights: Computer Programs: allows Accolade to make back-up copies and adapt the programs to use in a computer, but this doesn’t cover what they are doing here. Here they are translating the Sega program. They didn’t need to make copies to use the Sega machine.

2) Using decompiler program to figure out Sega’s source code, this creates a copy. Then they print this out, another copy. These are unauthorized copies and derivative works.

3) Revised games written for other machines to include the Sega initialization code: this probably OK. Under Borland the initialization string is an uncopyrightable method of operation, since it is the only way to turn on the Sega Genesis console.

b. Fair Use Analysis:

1) Purpose of Ds use: blatantly commercial for which they could have bought a license.

a) Reinhardt argues that Sega’s program was protected in code form, there was no other way to get access to it without copying the code. Finds that copyright doesn’t require that Accolade go the slow, expensive route. Accolade doesn’t have to purchase a license with its attendant restrictions just to get access to the underlying unprotected facts.

b) Sega argues could get access by printing out the code and having an expert decipher it, but this still creates a copy. Only reason to go this route is because it is slower and more expensive. If Sega wants to solve this problem it could publish the source code.

2) Nature of Ps work: entertainment, no factual content, less hospitable to fair use.

3) Amount taken: copied the whole thing.

4) Effect on Ds market: consumers bought Accolade games when they would have otherwise purchases Sega games, these works will supercede the original.

c. § 1201 Analysis: legitimate to make copies for reverse engineering if trying to get at underlying unprotectible facts. Copies made in the course of doing this are OK. Constitutionality of 1201 is questionable.

The Application of the Fair Use Doctrine to New Technologies of Copying and Dissemination

1. Issue: if the technology was not well established when the statute was enacted, there is no express exemption. Industries have grown up in the shadow of express exemptions. (Jukebox). Exemptions are now written narrowly to avoid this experience.

2. Sony Corp v. Universal City Studios, 1984: P sued D for contributory infringement, D argued that home taping was fair use.

a. Contributory infringement: P arguing that though Sony doesn’t itself make the copies, it is inducing and profiting from widespread copyright infringement and should be liable for this facilitation. Sony argued that home copying is fair use, if consumer don’t infringe, neither does it. (still good law).

b. Substantial non-infringing use: court held that if a substantial use to which the machine can be put is legal, then Sony can’t be held liable for selling it.

1) Found that time-shifting was a principle use and that it was legal. Distinguished time shifting from librarying. (still good law)

2) Identified copyright owners that were willing to authorize the use.

c. Fair use analysis: uses as an equitable rule of reason and only pays attention to the first and fourth factors.

1) Purpose of Ds use: commercial use almost always unfair. Consumer home use lumped in with non-commercial use. Personal copying excused as fair use. (still good law). Non-commercial fair use presumptions are gone.

2) Nature of Ps work: entertainment, not a core protected use.

3) Amount of work taken: substantial amount.

4) Effect on the potential market: if the use is non-profit, the burden is on P to prove market harm. If the use is commercial, the harm is presumed. Here because lump in with non-commercial home taping, P has to prove harm. Can’t do this yet because market is new.

d. Blackmun dissent: criticizes majority for ignoring the productive/unproductive and transformative/non transformative use distinction. If the use is just consumptive, the copyright owner shouldn’t have to bear the burden for everyone else.

1) Litman commentary: these presumptions are unworkable because most of what goes by the name of private personal use would fit here. Corresponds to what people think is fair.

2) Many countries have an express personal copying privilege: have tax on blank media, consumers buy the privilege. Some are thinking about limiting this in response to digital media.

e. Sony detractors: let manufacturers off too easily. They should have been forced to negotiate for compulsory licenses on copyright holder’s terms. Unless personal copying is made illegal, copyright owners won’t be able to explore new uses for their works, such as pay per use. 1201 is attempting to plug this loophole.

f. Sony supporters: Created a new market for motion picture producers that now makes them more money than either theatrical or TV release.

g. Effect on fair use jurisprudence:

1) Commercial presumption: courts that relied on this found that commercial use couldn’t be fair unless D proved no likelihood of harm to Ps market, and that non-commercial use was OK unless P could point to some speculative harm.

2) The presumption is no longer with us after Campbell. If relying on cases decided between 1984 and 1994 need to figure out what work commercial use presumptions are doing. If determinative, the case isn’t good law anymore. If no alternative ground to rest decision, don’t rely on it.

a) Lexis v. Westlaw (I): court knocked down because Lexis was a commercial actor. Not good law now.

b) Note that lost both the presumption and the shifting burden of proof: the burden of proof is on D on all issues.

3. Princeton University Press v. Michigan Document Services, 1996: involved educational copying of coursepacks by copyshops, sold to students for a profit. Educators argued that this was fair use based on the market enhancement argument, increased the audience for academic works. Statute exempted multiple copies for classroom use, argued that it applied here. Finds that copying by the copyshops is not fair use because it is duplicative and harms the market. The majority refuses to say one way or the other whether copying by the student’s themselves is fair.

a. Purpose of Ds use: after Campbell so commercial presumption not being applied to transformative uses. But court finds that this is a duplicative use, disregards proof of effect on the market.

1) Criticized: market harm not hard to prove. Further if the harm is based on the loss of licensing fees, if the case determines that photocopying in this market is fair then P is not entitled to those fees. The fact that some copyshops pay doesn’t effect the analysis anymore than the fact that some parodist get licenses.

2) Even if course packs are not transformative: should have made Smith prove that there was no meaningful harm to the publishers’ market, he would have lost.

b. Fair use analysis of the students’ copying:

1) Purpose of Ds use: non profit educational use, multiple copies for classroom use.

2) Nature of Ps work: scholarly, intended for fair use.

3) Amount taken: all.

4) Effect on the market: If P has the right to license, this income is displaced if it is not paid. But not clear if they have the right to license in the first place.

a) Is there any market other than the licensing fees? Is this use hurting the market for textbooks. May not work because now have smart copy cards that can deduct the cost of the copy and the royalty.

b) Publishers argument is that they shouldn’t be forced to subsidize education.

c) Could argue that publishers are not entitled to extract all of the rents possible from their works in accord with the purpose of the copyright grant.

4. American Geophysical Union v. Texaco, 1995: Held that copying of journals was not fair use. Difference from earlier case is the establishment of the Copyright Clearance Center (CCC). Used one scientist as representative of all workers. Texaco had bought institutional subscriptions, then let journals circulate and scientist copy from them for their files as necessary.

a. Background: precedent in Williams v. Wilkins, publisher sued library for photocopying an interlibrary loan request. Held to be fair use even though it was massive copying. Affirmed by an equally divided court. Left wholesale copying of journals open under fair use.

b. Fair Use Analysis:

1) Purpose of Ds use: scientific research in a commercial setting. Commercial benefit could result from the use if create exploitable applications. Also have possible future benefit to the public at large.

a) Not commercially exploiting the articles themselves.

b) Texaco’s use is not transformative, just duplicative. Archival purpose, not taking into the lab for research.

i) Could argue that this is a transformative work: scientists are using these articles as the basis for more research. Calling this non-transformative betrays an artsy prejudice.

ii) No one wants to exploit the copyrighted language but there is no way to separate the protectible from the unprotectible parts, good argument here for merger. If entitled to copy should be allowed here where can’t separate.

c) Though this type of use has long been thought to be customary and fair, cuts against Texaco because its consumptive and duplicative.

2) Nature of Ps work: factual, published precisely to reach these scientist so that they can learn and use findings in their own research. Using uncopyrightable information expressed in copyrighted materials.

3) Amount taken: whole articles.

4) Effect on Ps market: Texaco already bought 3 subscriptions, unlikely to buy more.

a) Peculiar market: authors don’t make any money. Publishers charge for subscriptions. Authors don’t need incentive to write, but do need publication opportunities. Publishers need subscription revenues to incent them to give opportunities to authors. Authors are not a factor here, can’t give permissions for the articles because the journals own the copyrights.

b) Copyright Clearance Center: trying to create a licensing market.

i) Court wrongly compares this to ASCAP, but no one would argue that public performance was fair use, a clear exclusive right of the copyright owners’.

(ii) Court saying that the existence of an opportunity to exploit the copyright makes it unfair to exploit it without paying. The mere possibility of charging makes prior fair use inapplicable.

(iii) If effect on the market doesn’t supplant an existing market, less of an argument against fair use. But have to look at whether supplanting a potential or existing market. Must guard against circularity in this factor. If a copyright owner would refuse to license at any price, then there is no point in considering it part of the market. (Campbell). Though this is not likely to be the case for published research.

V. Enforcement of Copyright

A. Individual, Vicarious, and Contributory Liability

1. § 501: an infringer is anyone who violates the exclusive rights in 106, which includes the rights to do or to authorize. Infringers are those that do or authorize the infringing act (direct liability), and anyone who supervises the infringing act (vicarious).

2. Direct liability: imposed on a strict liability basis: doesn’t matter if D knew or why they infringed except in connection with a fair use analysis or calculation of damages. D will be liable even if he believed what he was doing was legal.

a) Vicarious: imposed on D who did nothing actionable, but had power to stop infringement and stood to benefit from the infringement. (Nightclub owners). Note that Ds can be held both vicariously and contributorily liable.

1) Fonovisa v. Cherry Auction, 1996: 9th Cir. Held auction vicariously liable because it had the ability to supervise, control merchants, and benefited from the sale of records. Agreements with vendors gave Cherry the ability to control their actions. Would have been liable even if it didn’t know the venders were selling counterfeit records because vicarious liability is direct and imposed under strict liability.

2) Religious Technology Center v. Netcon Online Communication Services, 1995: P sued D for direct infringement because it made copies of infringing documents in its computer memory and on a server that transmitted the documents. Knowledge doesn’t matter because have strict liability. Court held that D was not liable because it didn’t make the copies, just provides the machine and the copies are made by the subscriber who post data by pushing a button.

a) Fees are not tied to the material being posted, flat fee.

b) D can’t control the data packets moving through Ds computer, can’t read them as they go by.

c) Could be held contributorily liable if prove that Netcom learned of infringement and failed to cancel the message or prevent them from disseminating. Suffices to prove substantial participation and facilitation.

d) § 512 codifies Netcom: only real power of copyright holders is to get ISPs to take infringing materials down. Although some argue that tilted in favor of copyright owners.

3. Indirect liability: the person responsible for the infringing work. Damages will be increased if the violation was willful.

b) Contributory: knowingly inducing or facilitating infringement, since Sony, requires knowledge of the infringing activity. Hard to infer what Sony knew, relied on machine’s capability for non-infringing uses.

1) A&M Records v. Abdallah, 1996: found D guilty because although timed cassette tapes were capable of non-infringing uses, there was plenty of evidence that the infringing uses were substantial. Found that D was facilitating infringement with full knowledge, not just supplying a tool capable of infringing uses.

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